Ashima: Good morning Dewan Sir! I have several questions about claim drafting for you.

Dr. Dewan: Good morning Ashima

Ashima: Are subjects like "a computer readable medium/a computer program/a program product" in claims allowable? If not, is there any development at the Indian Patent Office to accept merely part of the subjects?

Dr. Dewan: In India, it is possible that claims directed to "a computer readable medium or a program product", if they provide a technical solution to a technical problem in relation to the medium or in relation to the product will be allowed. However, “a computer program", by itself (per se) will not be allowed.

The application of the computer program to solve a technical problem by providing a technical solution will be allowed.

Ash: Sir, Is it required to include reference signs of drawings in claims? If not, is there any binding of claim scope if reference signs are included in claims?

Dr. Dewan: Yes, reference numerals (signs of drawings) are required to be included in the claims. These reference numerals do not in general restrict or bind the scope of the claims and are included for the purposes of identification only.

Ash: Sir what about restriction on "one independent claim for one category" in claims, like in EP? Why does a controller sometimes ask the applicant to limit the number of independent claims considering all claims fulfil the requirement of Unity?

Dr. Dewan: Yes, the Controllers in India generally insist on one independent claim for one category. If there is a requirement of more than one independent claim, Controllers generally raise a unity objection or ask that the second and following independent claims be made dependent on the first independent claim.




Ash: Ok Sir! In India is it allowed to include the wording of "A and/or B" in claims, which is not likely to be accepted in US?

Dr. Dewan: No. The wordings "A and/or B" in claims will not be allowed in India either this will result in a unity objection or the Controller will ask to delete the “and/or” part or there will be a clarity objection of lack of precision. In such cases, it will be better to make three separate claims “A” and “B”, only “A” and only “B”.

Ashima: Sir why is it required to not use phrases like "further" in the phases of "further comprising/comprises/configured to"

Dr. Dewan: Some Controllers are averse to the use of the word “further comprising” or “further comprises” or “further configured to”. According to these Controllers, the word “further” makes the claim non-definitive. If the portion of the element after “further” gives an additional technical advantage, it could be useful in dividing this “further” portion out. It would be preferable to merely state the additional embodiment feature separately without addition of the term “further”.

Ashima: Is that why we also avoid using of "specifically" in the phases of "specifically comprising/comprises/configured to"

Dr. Dewan: Yes! The term "specifically" or "specifically comprising/comprises/configured to" is best avoided as it is considered vague on the one hand and restrictive on the other.  

Ashima: Sir do we have to pay additional fees if number of claims exceeds certain number?

Dr. Dewan: Of course! If the claims exceed 10, the excess claim fee is Rs. 1600 per claim in excess.

Ashima: Thanks Sir! That’s a breather!! I was wondering how to reduce/minimize office objection while writing claims for an Indian client. This would help…a lot!!


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